Banking News – Following the Supreme Court’s decision in a dispute over the use of a trademark similar to “Center Fruit,” the Department of Industry has cancelled the trademark registration of “Perfect Center Fillz” chewing gum. The Supreme Court had ruled that the trademark of “Perfect Center Fillz” is confusingly similar to “Center Fruit” of Perfetti Van Melle S.p.A., an Italian multinational confectionery company.

After the Supreme Court’s decision, the Department of Industry has cancelled the said trademark registered in the name of Perfect Foods Pvt. Ltd., located in Duhabi, Sunsari. Perfect Foods had initiated the trademark registration process under Class 30 for chewing gum through application number 061822. In this dispute, the Supreme Court considered not just a comparison of the words in the two trademarks but their overall presentation and the impact on consumers.

According to the legal analysis of the decision in Case No. 077-CI-0301, the Supreme Court concluded that there is sufficient similarity between “Perfect Center Fillz” and “Center Fruit” and that ordinary consumers could be confused by it. The court has taken the view that comparing only the name and words is not sufficient when determining whether there is similarity between trademarks. According to the legal analysis of the decision, the pronunciation of the trademark, its visual form, the nature of the product, the place of sale, the attention given by consumers during purchase, and the overall impact on the market must also be evaluated.

Advocate Nirav Gyawali, who has been advocating in the commercial sector, stated that this decision has established an important precedent in the field of trademark protection. According to him, this decision is important for discouraging the tendency to create confusion among consumers by using marks similar to established brands. During the dispute, Perfect Foods had argued that the company’s name, packaging, and other words used in the trademark were different.

The company had also claimed that since words like “Center” and “Fruit” are commonly used, using those words would not create confusion among consumers. However, the legal analysis of the Supreme Court’s decision states that rather than viewing the words used in the trademark separately, priority has been given to the overall impact it has on consumers. The court has acknowledged that “Center Fruit,” which has been used in the market for a long time and has become established among consumers, has created a distinct commercial identity.

The decision states that in such a situation, the possibility of confusion among consumers is not eliminated merely by adding additional words like “Perfect” or “Fillz.” This decision is also considered important from the perspective of protecting trademarks and intellectual property in Nepal. Amir Raj Thapa, General Manager of the American Chamber of Commerce (AmCham), stated that along with policy stability, legal protection of intellectual property is also necessary to attract foreign direct investment in Nepal.

According to him, such steps help create an environment where foreign investors receive effective protection of their brands, intellectual property, and commercial interests in Nepal.

“Such decisions regarding the protection of established brands and intellectual property, and their effective implementation, can further strengthen international confidence in Nepal’s investment environment,” Thapa said.

Nepal’s Patent, Design and Trademark Act, 2022 also has a provision that registered trademarks can be cancelled under certain conditions. Section 18(3) of the Act gives the Department of Industry the authority to cancel such trademarks. Similarly, Section 19 has a provision that if business is conducted using a cancelled trademark, a fine can be imposed and the concerned goods can be confiscated according to law.

On this basis, if business is continued using the same mark even after the trademark registration is cancelled, there remains a risk of legal action. Meanwhile, Perfetti Van Melle Nepal has stated that it is continuously monitoring the market situation. The company has stated that it will take necessary legal steps to protect its trademark and consumer interests. According to the company, the actual “Center Fruit” product has not been affected by this decision. The legal analysis states that this decision gives the message that a registration certificate alone cannot be considered the final basis for the protection of an established trademark.

Nepal’s trademark law has also given importance to the protection of established trademarks in accordance with international practice. Even in international intellectual property arrangements, there is a provision to provide legal protection taking into account the situation where using a mark similar to an established brand can create confusion among consumers. In recent years, disputes related to the use of marks similar to the names, logos, packaging, and overall commercial identity of established brands in Nepal have been increasing.

In such a situation, the decision related to “Center Fruit” has given an important message to domestic and foreign investors, businesspersons, and regulatory bodies. According to the legal analysis of the decision, merely registering a trademark does not automatically make its use protected. A trademark registered by ignoring the identity of an established brand and the possibility of creating confusion among consumers can be cancelled later.